The last two posts were about a case, DeliverMed Holdings, LLC v. Schaltenbrand, involving ownership of a logo. In the first post, it turned out that the copyright in the logo was still owned by the designer, not the company using the logo. @WatermarkIAM tweeted a caution: “You must make sure #copyright ownership is clear when #trademark logo’s designed! Not just a US problem…”
In the second post, about the trademark ownership, there was not definitive answer about who owned the trademark, only a negative holding that the plantiff didn’t. We were left with two potential owners, either the pharmacy using the mark or the joint venture on whose behalf the pharmacy was acting. Which means that DeliverMed, who claimed to own both the copyright and the trademark rights, owned neither and, further, the ownership of the two rights was was split up.
The EU has a law that serves to avoid this outcome for Community Trademarks.
Council Regulation 207/2009, Art. 53, 2009 O.J. (L 078) 1 says that:
|2. A Community trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Community legislation or national law governing its protection, and in particular: … (c) a copyright ….|
So the copyright owner can invalidate a trademark registration, and indeed that happened to the registration for the “halo” logo for Innocent smoothies:
I’m not sure that the approach used by the EU solves the problem though, since it defaults ownership in the party who added less value to the asset — that is, the logo itself isn’t intrinsically valuable as a work of art, but instead it’s the goodwill in the mark that is the more significant part of the value of the logo. It also seems disproportionate; a fee dispute (as was the provoking event in the Innocent logo) can result in the loss of a a company’s most valuable asset. But I’d like to think that, because the EU law expressly addresses the potential for disjunctive ownership, the parties are more careful about contracting for ownership at the outset (any opinion on that from EU lawyers out there?)
It’s a conundrum. Back to WatermarkIAM’s advice, “You must make sure #copyright ownership is clear when #trademark logo’s designed!”
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